The first European Union regulation that imposes
specific duties on indirect infringers of intellectual
property rights is Article 8(3) of Directive
2001/29/EC of the European Parliament and of the
Council of 22 May 2001 on copyright and related
rights in the information society. This provision
stipulates that Member States must ensure that
rightholders can apply for an injunction against
intermediaries whose services are used by a third
party to infringe any copyright or related rights.
This solution has been reproduced in relation to
industrial property rights in Article 11, third
sentence, of Directive 2004/48/EC of the European
Parliament and of the Council of 29 April 2004 on
the enforcement of intellectual property rights.
While implementing Directive 2004/48/EC into the
Polish legal order, the Polish legislator omitted the
regulations transposing Article 11, third sentence,
considering that this objective has already been
achieved by the provisions of the Civil Code,
including Article 422 of the Civil Code that provides
for tort liability for inciters, accomplices and
persons who have knowingly benefited from the
damage caused.
According to the case-law of the EU Court of
Justice, the duties of intermediaries are
independent of the fact of their being held liable
for the infringement. Therefore, there is no need to
allege anything against an intermediary, even
failure to exercise due diligence. Moreover, while
the objective of the above-mentioned EU
regulations is to take steps aimed at putting an end
to, or limiting, infringements, they do not give rise
to liability for damages. However, under Article 422
of the Civil Code damages may be claimed, but no
action to put an end to the infringement may be
taken. As such, this provision does not make it
possible to achieve the effects required by the EU
directives.
On 16 March 2019, an amendment to the Industrial
Property Law Act of 30 June 2000 (“Amendment”)
came into force. It aims to implement Directive (EU) 2015/2436 of the European Parliament and of
the Council of 16 December 2015, which seeks to
approximate the laws of the Member States relating
to trade marks. The Amendment for the first time
introduces into the Polish legal system an indirect
liability for the infringement of intellectual
property rights. However, it does so only in respect
of the infringement of the trade mark right.
Pursuant to the amended Article 296(3) of the
Industrial Property Law Act, all claims for the
infringement of the protection right for a
trademark (and, consequently, claims for damages
and handover of benefits) may also be pursued
“against a person who only places the goods
labelled with the trademark on the market if they
are not provided by the proprietor or a person
authorised by the proprietor to use the trademark,
as well as against a person whose services were
used in relation to the infringement of the
trademark protection right.” This provision does
not apply to persons whose liability is excluded
under Articles 12 to 15 of the Act of 18 July 2002 on
the Provision of Electronic Services. As such,
service providers providing electronic services will
not be liable for transmitting or storing data that
infringe a trademark as long as they meet the
conditions set out therein.
Although the legislator made efforts to regulate the
duties of indirect infringers of intellectual property
rights, it did so only in relation to the trademark
infringement. In addition, the legislator introduced
the possibility of asserting pecuniary claims against
intermediaries that frequently are not infringers,
which is not supported by EU law. In addition, the
liability of online intermediaries has been excluded,
which is also not supported by EU law. Thus, Polish
law remains inconsistent with EU law.
MILLER CANFIELD
W. BABICKI, A. CHEŁCHOWSKI I WSPÓLNICY SP.K.
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certain recent legal developments of selected areas of law. For this reason the information contained in this publication should not form the basis of any
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